Quicksilver Gets Rocked in Trade Mark War with Kelly Slater – Sweeny Legal

SweenyLegal-Reversed

30 July 2013. Huntington-beach based Quicksilver recently lost a trademark dispute involving its new Kelly Slater promoted VSTR line of clothing against another clothing label called “Visitor”. World Marketing, Inc., who has had a trademark registration for the Visitor brand for over 15 years and has been using it for over 25, argued that Quicksilver wilfully infringed its trademark. After a six-day trial, a jury in the U.S. District Court in Santa Ana, California agreed, awarding the them $3.5 million in reasonable royalties and punitive damages. Liability was based on trademark infringement and unfair competition causes of action.

VSTR, which is supposed to be pronounced “visitor”, launched in January 2012. After World Marketing caught wind of the surf apparel juggernaut’s encroachment on their space, its attorneys sent a demand letter to Quicksilver, asking that they cease and desist selling clothing under the VSTR brand. Rather than comply with the letter or pay a licensing fee, Quicksilver decided to flex its $2 billion muscles and drop a lawsuit on World Marketing.

This proved to be an especially bad idea as the VSTR line is now defunct after layoffs and brand cuts across Quicksilver. Marketing VP of family-owned World Marketing, Neil Mossberg, would not be bullied, saying:

“I can’t really talk about the case. However, I will say this: I know we are not as famous as Kelly Slater, and I know our stock is not traded like Quicksilver’s. However, I also know we will not be wiped out without a fight.”

World countersued, drawing the court’s attention to the fact that its brand has existed since 1987 and that it obtained a trademark registration for the brand in 1998.  Quicksilver then presented its trademark registration for VSTR. It’s difficult to see how Quicksilver was able to obtain this trademark registration even though it was only for shirts, considering the much longer life span of World Marketing’s trademark.

Interestingly, surf icon and defending Association of Surfing Professionals champion Kelly Slater himself was subpoenaed and called to testify in the case. Initially he said that he was unavailable to testify because he was preparing full-time for the final stop of the ASP Championship. He eventually was deposed.

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Filed under Intellectual Property Law, Trade Marks Law

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